No.

08-694

In The
Supreme Court of the United States
-------------------------- ♦ --------------------------

FEDERAL TRADE COMMISSION,

Petitioner,

v.

RAMBUS INCORPORATED,
Respondent.

-------------------------- ♦ --------------------------
ON PETITION FOR WRIT OF CERTIORARI
TO THE UNITED STATES COURT OF APPEALS
FOR THE DISTRICT OF COLUMBIA CIRCUIT
-------------------------- ♦ --------------------------
BRIEF OF AMICI CURIAE IN SUPPORT OF
PETITION FOR WRIT OF CERTIORARI OF
ADVANCED MEDIA WORKFLOW ASSOCIATION (AMWA); CONSUMER
ELECTRONICS ASSOCIATION (CEA); GLOBALPLATFORM INC.; IMS
GLOBAL LEARNING CONSORTIUM, INC. (IMS); INTERNATIONAL
IMAGING INDUSTRY ASSOCIATION, INC. (I3A); IPC, ASSOCIATION
CONNECTING ELECTRONICS INDUSTRIES; LINUX FOUNDATION;
MIDI MANUFACTURES ASSOCIATION; MOBILE PRINTING AND
IMAGING CONSORTIUM, INC.; OPEN GEOSPATIAL CONSORTIUM,
INC. (OGC); OPENSAF FOUNDATION; ORGANIZATION FOR THE
ADVANCEMENT OF STRUCTURED INFORMATION STANDARDS
(OASIS); PICMG-PCI INDUSTRIAL COMPUTER MANUFACTURERS
GROUP, INC. (PICMG); SOCIETY OF MOTION PICTURE AND
TELEVISION ENGINEERS (SMPTE); THE OPEN GROUP (TOG); THE
SOFTWARE DEFINED RADIO FORUM, INC.; VIDEO ELECTRONICS
STANDARDS ASSOCIATION (VESA); VMEBUS INTERNATIONAL
TRADE ASSOCIATION (VITA); XBRL INTERNATIONAL, INC.
-------------------------- ♦ -------------------------
Andrew Updegrove
Counsel of Record
GESMER UPDEGROVE LLP
40 Broad Street
Boston, Massachusetts 02109
(617) 350-6800

Counsel for Amici Curiae December 23, 2008

THE LEX GROUPDC ♦ 1750 K Street N.W. ♦ Suite 475 ♦ Washington, DC 20006
(202) 955-0001 ♦ (800) 815-3791 ♦ Fax: (202) 955-0022 ♦www.thelexgroupdc.com
 i

TABLE OF CONTENTS

Page

TABLE OF AUTHORITIES ......................................iii

INTEREST OF AMICI CURIAE................................ 1

SUMMARY OF THE ARGUMENT ........................... 5

ARGUMENT............................................................. 10

I. The Viability of the Private

Sector Standards Development
Process is Vital to the National
Interest ................................................ 10

A. Standards are Essential to

Almost All Aspects of
Modern Life............................... 10

B. Government has Deferred

to the Private Sector for
Fulfillment of
Government's Standards
Development Needs.................. 13

C. Government has Become

Increasingly Dependent
upon Private Sector
Standards Development to
Enable its Operations and
Permit it to Achieve its
Policy Objectives....................... 15
 ii

II. Standards Development

Organizations Adopt, and Must
Trust Members to Obey, Rules
that Require Disclosure of
Relevant Patent Claims ...................... 20

A. SSOs Adopt IPR Policies to

Protect Members, Non-
Members and the
Marketplace .............................. 20

B. Absent a Justifiable
Presumption of Trust,
Stakeholders have More to
Lose than to Gain by
Participating in Standards
Development ............................. 24

C. SSOs are not Able to

Enforce their IPR Policies
Effectively, and Must
Therefore be Able to Rely
upon the Courts and
Regulators to Enforce
Policy Obligations..................... 26

CONCLUSION ......................................................... 28
 iii

TABLE OF AUTHORITIES

Page(s)
CASES

Broadcom Corp. v. Qualcomm Inc.,

501 F.3d 297 (3d Cir. 2007) ........................... 27

In the Matter of Dell Computer Corp.,

121 F.T.C. 616, 1996 FTC LEXIS 291,
Docket No. C-3658 (May 20, 1996)
(Consent Order).............................................. 22

Rambus, Inc. v. Infineon Technologies AG,

318 F.3d 1081 (Fed. Cir. 2003) .... 20, 21, 22, 23

Stambler v. Diebold, Inc.,

11 U.S.P.Q.2d 1709 (E.D.N.Y. 1988) ............. 22

LAWS, LEGISLATIVE AND

ADMINISTRATIVE MATERIALS

E-Government Act of 2002, Pub. L. No. 107-347,

116 Stat. 2899 (2002).......................................... 16, 17

Federal Participation in the Development and

Use of Voluntary Consensus Standards and in
Conformity Assessment Activities, Circular A-
119, 63 Fed. Reg. 8545, 8546, 8554-55 (Feb.
19, 1998).............................................................. 13, 15

National Cooperative Research and

Production Act of 1993, 15 U.S.C. §§ 4301-05
(1993) ........................................................................ 14
 iv

National Technology Transfer and

Advancement Act of 1995 (NTTAA), Pub. L.
No. 104-113, 110 Stat. 775 (1996) .............................. 7

Standards Development Organization

Advancement Act of 2004, Pub. L. No. 108-
237, 118 Stat. 661 (2004).......................................... 14

OTHER

David A. Balto, Standard Setting in the 21st

Century Network Economy, The Computer and
Internet Lawyer, June 1, 2001................................. 11

Barack Obama on Innovation and Technology

(November 14, 2007), available at
www.si.umich.edu/~kahin/hawk/htdocs/cargill
paper.doc ..............................................................18-19

Carl F. Cargill, The Sisyphus Agenda:

Standardization as a Guardian of Innovation
(Jan. 27, 2003), available at
http://cip.umd.edu/cargillpaper.doc ......................... 23

ConsortiumInfo.org, Consortium and

Standards List (2008), available at
http://consortiuminfo.org/links/.......................... 21, 22

ConsortiumInfo.org, What (and Why) is an

SSO? (2008), available at
http://www.consortiuminfo.org/essentialguide/
whatisansso.php ....................................................... 26

Do It My Way, The Economist, Feb. 27, 1993.... 23, 24

 v

FTC, Competition and Intellectual Property

Law and Policy in the Knowledge-Based
Economy, Joint hearings of Federal Trade
Commission and Department of Justice
Antitrust Division (2002), available at
http://www.ftc.gov/opp/intellect/ .............................. 14

Health Information Technology, RAND

Corporation (2005), available at http://
www.rand.org/pubs/research_briefs/2005/
RAND_RB9136.pdf ................................................... 19

HITSP Website, available at

http://www.hitsp.org/default.aspx............................ 20

ISO, ISO In Figures (December 31, 2007),

available at http://www.iso.org/iso/about/
iso_in_figures.htm ................................................... 12

Mark A. Lemley, Intellectual Property Rights

and Standard-Setting Organizations, 90 Cal.
L. Rev. 1889 (2002) ............................................. 11, 22

NIST, Profiles of National Standards-Related

Activities, Spec. Pub. 912 (Robert B. Toth, ed.,
Apr. 1997).................................................................. 12

Andrew Updegrove, Survey: Major Standards

Players Tell How They Evaluate Standard
Setting Organizations, Consortium Standards
Bulletin (June 2003), available at
http://www.consortiuminfo.org/bulletins/jun03
.php#featured............................................................ 21
 vi

U.S. Department of Commerce, Standards

and Competitiveness – Coordinating for
Results 1 (May 2004) .................................................. 6

W3C, W3C Patent Policy (May 20, 2003),

available at http://www.w3.org/
Consortium/Patent-Policy-20030520.html .............. 22
 1

INTEREST OF AMICI CURIAE 1

Each amicus curiae participates in the global

process of standard setting, a time-honored process
of great benefit to society. There are hundreds of
standard setting organizations (SSOs) in the United
States alone, creating and maintaining tens of
thousands of technical, safety and other standards.

Amici curiae represent a broad range of SSOs

that participate in the standard setting process, and
each is greatly concerned by the adverse effects that
it anticipates will result from the application of the
United States Circuit Court of Appeals for the
District of Columbia Circuit’s decision in Federal
Trade Commission v. Rambus Incorporated, 522
F.3d 456 (D.C. Cir. 2008). Those effects will reach
virtually all aspects of modern society, commerce,
education and government, because all of these
interests rely heavily upon the efficient development
and broad adoption of standards by the private
sector.

The pervasiveness of standards, and of the

potential reach of the decision on petition, is
indicated by the range of focus of the amici curiae

1
The following statement is made in accordance with Sup. Ct.
R. 37.6: No part of this brief was authored by counsel for any
party and no monetary contributions were made by any person
or entity for the preparation or submission of this brief, other
than printing fees contributed by certain of the amici curiae. It
has been filed on a pro bono basis by Gesmer Updegrove LLP,
which represents many standard setting and promotional SSOs
on an ongoing basis, including thirteen amici curiae. Counsel of
Record has been notified within 10 days. Letters of consent
from both parties have been filed with the Clerk of this Court.
 2

that have joined in this brief. They include SSOs

that develop standards or support standards
development in sectors as diverse as defense,
consumer electronics, photography, on-line learning,
geospatial information, credit “smart” cards and a
broad array of computer system products and
services.

Amici curiae have a combined membership of

more than 13,300 (without adjustment for
overlapping memberships), including both Fortune
100 corporations and small privately held
companies; Federal, state and municipal agencies;
universities; and other non-profit entities. Amici
curiae include both types of organizations which are
vital to standard setting in the United States today:
those SSOs that have been accredited as standards
development organizations (SDOs) by the American
National Standards Institute (ANSI), and those that
have been formed to create standards in broad or
narrow technical areas, but have not sought ANSI
accreditation. The latter type of organization is
generally referred to as a “consortium.” The
standards that consortia develop are also
implemented globally. More specifically, amici curiae
are:

• SDOs: Consumer Electronics Association,

Inc. (CEA); International Imaging Industry
Association, Inc. (i3A); IPC, Association
Connecting Electronics Industries; Society of
Motion Picture Engineers (SMPTE); VMEBus
International Trade Association (VITA).
Collectively, this category of amici curiae
represents more than 10,550 members;
 3

• Consortia: Advanced Media Workflow

Association (AMWA); GlobalPlatform Inc.
(GPI); IMS Global Learning Consortium, Inc.
(IMS); Linux Foundation; MIDI
Manufacturers Association; Mobile Imaging
and Printing Consortium, Inc.; Open
Geospatial Consortium, Inc. (OGC); OpenSAF
Foundation; Organization for the
Advancement of Structured Information
Standards (Oasis); PICMIG-PCI Industrial
Computer Manufacturers Group, Inc.
(PICMG); The Open Group (TOG); The
Software Defined Radio Forum, Inc.; Video
Electronics Standards Association (VESA);
and XBRL International, Inc. Collectively,
this category of amici curiae represents more
than 2,750 members.

The members of the amici curiae

organizations, and tens of thousands of others like
them, participate in the development of standards
voluntarily and at significant cost in terms of dollars
and human resources. At the heart of the decision to
join an SSO is the expectation that the benefits
derived from participation will exceed the risks and
costs. Factors that make participation seem more
burdensome tend to discourage participation, with
attendant damage to the best interests of consumers
and national competitiveness in the global
marketplace. Amici curiae believe that the impact of
the Circuit Court’s decision will, for the reasons
described below, have just such a discouraging effect.

It is a fundamental goal of each amicus curiae

to participate in the development of “open”
 4

standards, i.e., standards that are available to all

industry participants and that are not subject to
unreasonable licensing terms. A cornerstone of any
SSO intellectual property rights (IPR) policy is a
section that addresses timely disclosure of relevant
member-owned patent claims. Absent a reasonable
expectation that a license to necessary patent claims
will be available on licensing terms that are at
minimum reasonable and non-discriminatory
(RAND), members and non-members of SSOs will be
unlikely to implement the standards that an SSO
develops. The existence, and enforceability, of an
effective IPR policy is therefore of paramount
importance to the viability of every SSO.

Each amicus curiae in consequence has a

strong interest in the development of sound law
supporting enforcement of the obligations
undertaken by members under SSO IPR policies. It
is of critical importance to amici curiae that SSOs be
able to rely on the courts and regulators to reliably
and consistently interpret and enforce the IPR
policies that SSOs adopt. Amici curiae believe that
the failure of the Circuit Court to affirm the decision
of the Federal Trade Commission (FTC) in the case
under review will: (a) encourage standard setting
participants to subvert the standards process; (b)
discourage participation in SSOs, because potential
participants will fear that they have more to lose
than to gain by doing so; and (c) discourage early
adoption of standards, because potential adopters
will fear falling victim to “patent ambush,” thereby
slowing adoption of standards vital to areas as
varied and vital as national defense, health, finance,
 5

E-Government, communications and, indeed, every

facet of our modern networked world.

SUMMARY OF THE ARGUMENT

The purpose of this amicus brief is not to

make legal arguments, but to acquaint the Court
with information supporting a decision by the Court
to allocate its limited time to consideration of the
legal questions at issue. In brief, amici curiae wish
the Court to understand the increasing dependency
of all aspects of society, commerce and government
on standards, and the fragility of the process by
which such standards are developed. Amici curiae
believe that the type of conduct that the FTC found
Rambus Incorporated (Rambus) to have engaged in,
if allowed to go unredressed, would severely
undermine and jeopardize the continued existence of
that fragile process.

Standards are vital to government

procurement, national competitiveness, and the
efficiency and safety of society. Standards are
created by voluntary, self-governing organizations
that have no effective enforcement power to police
the conduct of their members. In the information
and communications (ICT) sector, the
implementation of standards often results in the
infringement of the patents of members and/or non-
members. If the owners of these patent claims are
only willing to license their claims selectively, or on
unreasonable or discriminatory terms, then severe
consequences will follow, including unreasonable
costs to end-users, unfair discrimination against
individual industry participants, and often the
 6

complete failure of the standard in question. While

such a result cannot easily be avoided in the case of
a patent claim owned by a non-participant in the
standard setting process, it would be highly
inequitable for a patent owner to deceptively exploit
its participation in an SSO to ensure such a result
for its own benefit.

The value and importance of standards in the

modern world is profound. As an example, the
Department of Commerce concluded in 2004 that
standards affect an estimated 80 percent of world
commodity trade. U.S. Department of Commerce,
Standards and Competitiveness – Coordinating for
Results 1 (May 2004). In the ICT sector, the role of
standards is particularly crucial, as vital
infrastructural elements such as
telecommunications, the Internet and the Web
literally cannot exist without common agreement on,
and universal implementation of, enabling protocols
and other standards.

Moreover, private sector standards are often

incorporated by reference into laws. But unlike
public laws and regulations, standards are developed
within a process that is not only self-regulating, but
also largely unsupervised, except by those that
directly participate. As a result, the success or
failure of private sector standards development is
highly dependent upon trust. If those that
participate conclude that abusing the system is too
easy to accomplish, and that such abuse is too lightly
punished if discovered, then the entire system can
find itself in danger of collapse, because the risks of
participation and adoption of standards become
 7

greater than the benefits to be gained. Were such a

collapse to occur, virtually no aspect of society would
be immune from the consequences.

More specifically, amici curiae wish to

acquaint the Court with the following facts, as
developed in greater detail in the arguments that
follow:

1. Interoperability standards and other

technical specifications play a vital and essential
role in all aspects of modern society, commerce,
government, and indeed, virtually every other aspect
of our modern, networked world. With the
increasing utilization of the Internet to support and
enable finance, emergency response, homeland
security, defense, healthcare, government services,
education, communications, entertainment and
much more, the efficient development and ongoing
maintenance of hundreds of new ICT standards each
year is becoming especially critical.

2. In enacting the National Technology

Transfer and Advancement Act of 1995 (NTTAA),
Pub. L. No. 104-113, 110 Stat. 775 (1996), Congress
instructed each Federal agency to utilize standards
created by SSOs in preference to “government
unique” standards to the extent “practicable.” In so
doing, Congress deferred to the private sector to
supply the tens of thousands of standards upon
which the operations of government, and the
implementation of its policies, must rely. In contrast
to the government-supported process that is followed
in many other nations, the United States depends
upon representatives of industry, academia,
 8

consumers and government to participate, at their

own cost, in hundreds of non-profit SSOs to develop
standards for the good of all.

3. Since the enactment of the NTTAA,

government has become far more dependent upon
standards to achieve its goals. Examples of current
top-level policy areas that will be heavily dependent
upon the rapid development of essential ICT and
other standards include homeland security,
electronic records for healthcare, E-Government and
global warming.

4. SSOs adopt IPR policies that are

intended to identify patent claims that would be
“necessarily infringed” by an implementation of a
standard under development, and to ensure that
such “necessary claims” will be made available to all
would-be implementers under at least RAND terms.
Absent such knowledge and commitments, a patent
owner may gain a degree of monopoly power over the
implementation of a standard that can be greatly
abused, to the detriment of consumers.

5. The standards development process

relies heavily on a presumption of trust, and
specifically on the assumption that members will
honor their obligations under IPR policies. If that
trust can be violated with impunity, then there is
more for participants to lose than to gain by
participating, and the very existence of the
standards development infrastructure can become in
danger of collapse.
 9

6. Due to budget constraints and other

concerns, SSOs are not capable of enforcing their
rules in court. Because of the great cost of patent
infringement litigation, it is extremely expensive for
SSO members, and others that adopt standards, to
defend themselves when IPR policy rules are
violated.

7. SSOs, their members, those that adopt

standards, and those that rely upon the standards
they produce, therefore need to be able to rely on the
courts to defend, and regulators to robustly enforce,
their interests when standards development
participants betray their duties of trust and violate
IPR policy rules.

8. If the decision of the Circuit Court

stands, then the integrity and viability of the
standards development process will be endangered,
at great cost to society, to the national interest, and
to those that have made the substantial investment
in time and money, and undertaken the business
risk, to participate in good faith in the development
of standards.

The antitrust laws are particularly important

to preserving the integrity of the standards
development process. Unlike contract and fraud
remedies available under state laws, the antitrust
laws are national in scope, and therefore provide
greater predictability of result. They also permit
both public (via the regulators) and private (by
aggrieved parties) action, and are specifically
constructed to protect competition. If the courts
decline to enforce the integrity of standard setting
 10

when such laws are violated, then the option of

“gaming” the system will become more attractive to
SSO members. As a result, additional litigation will
reach federal and civil courts, discouraging
companies from adopting the standards in question,
and over-burdening those courts.

Given the rapid pace of innovation in

standards-dependent areas such as the technology
and telecommunications sectors and the increasing
dependence of the world on the products of such
innovation, amici curiae strongly support granting
certiorari in this case.

ARGUMENT

I. The Viability of the Private Sector

Standards Development Process is Vital
to the National Interest

A. Standards are Essential to Almost

All Aspects of Modern Life

A standard is required any time two or more

people need to agree to do something in the same
way -- whether it be setting the distance between
two railroad rails, the gauge of a pipe fitting, or the
technical characteristics of a computer modem.
Absent such agreement, one could ride one train only
to the end of its owner’s tracks before having to
switch to the train owned by the next carrier; one
could only purchase plumbing products from a single
vendor for a given project; and one could exchange
electronic data only with a remote source known to
have the same modem. Multiply this reality
 11

1,000,000 times, and one begins to form a picture of

the vital importance of standards.

Standards underlie almost all aspects of

modern life. They are essential to protect security,
safety and health. For example, SSOs set standards
for building codes, fire safety codes and equipment
specifications for diverse types of emergency
responder and Homeland Security equipment. SSO
standards also enable and drive technological
advancement and innovation, keeping our domestic
infrastructure strong and our economy competitive.
Fault intolerant areas such as finance, defense,
aerospace and telecommunications depend on
rigorous adherence to SSO standards-based
specifications, tools, processes and certifications.

Economically, it is well recognized that

“standardization has significant consumer benefits
in many markets.” Mark A. Lemley, Intellectual
Property Rights and Standard-Setting
Organizations, 90 Cal. L. Rev. 1889, 1896 (2002).
Standard setting serves to “increase price
competition,” “increase compatibility and
interoperability, allowing new suppliers to compete,”
and “increase the use of a particular technology,
giving the installed base enhanced economic and
functional value.” David A. Balto, Standard Setting
in the 21st Century Network Economy, The
Computer and Internet Lawyer, June 1, 2001, at 3.
Indeed, in the absence of appropriate standards in a
patent-rich environment, only a single vendor and
such licensees as it chose to favor could offer a new
technology, resulting either in the failure of the
technology to become widely adopted, or in the
 12

development of an inefficient monopoly in the IPR

owner for the life of the involved patents.

Out of necessity, the modern world has

become increasingly dependent upon the voluntary
consensus process that creates standards. The
result is a global standard setting infrastructure that
is as extensive as it is invisible to those not directly
involved. This infrastructure includes the official
national standard setting organizations of the 157
countries that today comprise the membership of the
International Organization for Standardization
(ISO), together participating in 3,093 separate
technical committees, subcommittees and working
groups. ISO, ISO In Figures (December 31, 2007),
available at http://www.iso.org/iso/about/
iso_in_figures.htm. It is estimated that these and
other national organizations maintain an incredible
780,000 (or more) official, nationally adopted
standards. NIST, Profiles of National Standards-
Related Activities, Spec. Pub. 912 (Robert B. Toth,
ed., Apr. 1997). Consortia create thousands more
standards that also achieve national or global
adoption, particularly in the ICT industries. As a
result, standards represent essential underpinnings
to the functioning of the entire modern world. Any
action that impedes the process of creating or
adopting these standards will also undercut the
institutions that rely on them to function. Given our
reliance on these institutions, such actions will
necessarily and adversely impact a bewildering
array of aspects of modern life.
 13

B. Government has Deferred to the

Private Sector for Fulfillment of
Government’s Standards
Development Needs

The Federal government has increasingly

recognized that standards created through the
voluntary consensus process are essential to its own
efficient and cost-effective functioning. Historically,
the government preferentially used “government
unique” standards in much of its purchasing, which
often served to limit the number of bidding vendors
and resulted in higher purchasing costs. As a result,
Congress enacted the NTTAA in 1996, which
requires Federal agencies to use non-government
unique standards whenever possible, but to actively
participate in the activities of SSOs. The most
important Federal agencies in the United States use
hundreds, and even thousands, of SSO maintained
standards, and are completing the task mandated by
the NTTAA of substituting SSO and other non-
government standards for pre-existing government
and agency-specific standards. In 1998, the Office of
Management and Budget (OMB) updated its
Circular A-119 to provide additional guidance to the
Federal agencies on implementing such standards.
Federal Participation in the Development and Use of
Voluntary Consensus Standards and in Conformity
Assessment Activities, Circular A-119, 63 Fed. Reg.
8545, 8546, 8554-55 (Feb. 10, 1998).

Since the enactment of the NTTAA, the

Federal government has continued to take actions to
facilitate standard setting by SSOs generally. In
2002, the Federal Trade Commission and the
 14

Department of Justice held joint hearings entitled

Competition and Intellectual Property Law and
Policy in the Knowledge-Based Economy, which
focused in part on IPR policies. See FTC, Joint
hearings of Federal Trade Commission and
Department of Justice Antitrust Division (2002),
available at http://www.ftc.gov/opp/intellect/. In July
of 2004, the Standards Development Organization
Advancement Act of 2004, Pub. L. No. 108-237, 118
Stat. 661 (2004), was signed into law, extending the
coverage of the National Cooperative Research and
Production Act of 1993, 15 U.S.C. §§ 4301-05 (1993),
which provides a measure of immunity from
antitrust sanctions, to SSOs.

In short, the Federal government has placed

vital standards-based national interests in all areas
of its activities almost entirely in the hands of the
private sector standards development process, and
has acted to encourage industry generally to rely on
standards developed by the same organizations. It is
therefore critical that the reasonable rules adopted
by SSOs to manage their processes are given force
and effect, and that those participants in SSO
activities that are found to violate such rules are
convincingly punished for their actions.
 15

C. Government has Become

Increasingly Dependent upon
Private Sector Standards
Development to Enable its
Operations and Permit it to
Achieve its Policy Objectives

The National Institute of Science and

Technology (NIST) is required by the NTTAA and
OBM Circular A-119 to report to Congress annually
on the compliance of the Federal agencies with the
requirements of the NTTAA. NIST has reported
that through 2006 (the latest year for which
information is publicly available), the Federal
agencies had replaced at least 2,402 government
unique standards with voluntary consensus
standards, and referenced in excess of 20,000 non-
government standards in procurement and
regulatory documents. NIST also reported that in
2006, an all-time high of 4,075 Federal agency staff
members actively participated in a total of 413 SSOs.
Indeed, in 2006, the Federal agencies referenced 591
voluntary consensus standards for the first time, and
promulgated only five new government unique
standards, for a grand total of only 73 new,
government unique standards over the preceding 10
years.

Moreover, since the passage of the NTTAA,

both Congress and successive administrations have
enacted and pursued an increasing number of high-
level policy initiatives that can only be accomplished
if a continuing stream of sophisticated ICT
standards continue to be rapidly developed and
widely deployed. That result cannot occur unless all
 16

necessary patent claims under these standards are

available on RAND, or less restrictive, terms. Those
initiatives include:

E-Government: The Clinton and Bush

Administrations and Congress have all recognized
and supported the goal of making government more
transparent and accessible to citizens through the
use of Internet-based technologies. Similarly, they
have realized the necessity and cost benefits of
enabling the exchange of data within and across the
Federal agencies. Each of these goals must rely
heavily on the existence and uniform adoption of ICT
standards. In 2002, Congress enacted the E-
Government Act of 2002, Pub. L. No. 107-347, 116
Stat. 2899 (2002), the purposes of which include:

Relating to citizen-government interaction:

(2) To promote use of the Internet and

other information technologies to
provide increased opportunities for
citizen participation in Government….
(9) To make the Federal Government more
transparent and accountable….
(11) To provide enhanced access to
Government information and services
in a manner consistent with laws
regarding protection of personal
privacy, national security, records,
retention, access for persons with
disabilities, and other relevant laws.
 17

Relating to intra-governmental interaction:

(5) To promote the use of the Internet and

emerging technologies within and
across Government agencies to provide
citizen-centric Government information
and services…
(6) To reduce costs and burdens for
businesses and other Government
entities.
(7) To promote better informed
decisionmaking by policy makers.

Achieving these goals will require a government-

wide ITC infrastructure that implements a myriad of
Internet, browser, data format, accessibility,
federated identity, privacy and security standards,
many of which do not today exist.

In furtherance of these goals, the Clinton

Administration created the Federal Chief
Information Officers Council (CIO Council), which
was later codified into law under the Bush
Administration in the E-Government Act. That Act
also requires maintenance and implementation
across the Federal agencies of the standards-based
Federal Enterprise Architecture (FEA), and directs
the CIO Council to work with NIST and the
Administrator of the Office of Electronic Government
and Information Technology within the OMB to
undertake a number of important activities to enable
the interoperability goals of the FEA, including:

…to develop recommendations on

information technology standards developed
 18

under section 20 of the National Institute of

Standards and Technology Act (15 U.S.C.
278g-3) and promulgated under Section 11331
of Title 40, and maximize the use of
commercial standards as appropriate,
including the following:

1. Standards and guidelines for

interconnectivity and interoperability
as described under section 3504

2. Consistent with the process under

section 207(d) of the E-Government Act
of 2002, standards and guidelines for
categorizing federal government
electronic information to enable
efficient use of technologies, such as
through the use of extensible markup
language

3. Standards and guidelines for federal

government computer system efficiency
and security under section 301 of the E-
Government Act of 2002

During the just completed presidential campaign,

then-Senator Obama released a position paper
making clear his intentions to build upon and
advance this same agenda, promising to employ,
“cutting edge technologies to…create a new level of
transparency, accountability and participation for
America’s citizens.” Barack Obama on Innovation
and Technology (November 14, 2007), available at
http://www.barackobama.com/pdf/issues/technology/
 19

Fact_Sheet_Innovation_and_Technology.pdf. More
specifically, the President Elect has promised to
name the first government-wide Chief Technology
Officer.

Healthcare: The goals of providing universal

healthcare while decreasing the overall costs of
providing healthcare for an aging population
represents one of the greatest challenges facing
government today. A recent RAND Corporation
research summary concluded that, “If most hospitals
and doctors’ offices adopted HIT [health information
technology], the potential efficiency savings for both
inpatient and outpatient care could average over $77
billion per year,” concluding:

Widespread adoption of HIT and related

technologies, applied correctly, could greatly
improve health and healthcare in America
while yielding significant
savings….Government action is needed;
without such action, it may be impossible to
overcome market obstacles. Our findings
strongly suggest that it is time for government
and other payors to aggressively promote the
adoption of effective Health Information
Technology.

Health Information Technology, RAND Corporation

(2005), available at http://www.rand.org/pubs/
research_briefs/2005/RAND_RB9136.pdf

The government has taken up this promise

and recognized the standards-based dependencies for
achieving it. In 2005, the Department of Health and
 20

Human Services launched a public-private

partnership called the Health Information
Technology Standards Panel (HITSP) to address
these dependencies. HITSP currently operates 13
working groups, each tasked with the creation of a
standard needed to enable the health information
technology goals of its public and private sponsors.
HITSP Web Site, available at
http://www.hitsp.org/default.aspx.

The above represent only two examples of the

many areas of government policy in which standards
will play an increasingly vital role. Others include
addressing climate change, bringing next generation
Internet access to all Americans, enabling first
responders to communicate with each other,
addressing homeland security threats, and much
more. In each case, government will be dependent,
both by law and in fact, on the viability of private
sector standard setting to achieve its goals.

II. Standards Development Organizations

Adopt, and Must Trust Members to Obey,
Rules that Require Disclosure of
Relevant Patent Claims

A. SSOs Adopt IPR Policies to Protect

Members, Non-Members and the
Marketplace

While legally the Rambus case involves a

dispute involving patent rights, the more
fundamental question is whether the conduct that
the FTC found Rambus to have engaged in defeated
the goals of the JEDEC’s IPR Policy and violated the
 21

reasonable expectations of JEDEC’s members, and if

so, how such conduct can be avoided in the future.

Hundreds of United States SSOs today

maintain thousands of standards relating to diverse
technologies. For a partial list, see
ConsortiumInfo.org, Consortium and Standards List
(2008), available at http://www.consortiuminfo.org
/ssl/links.php?cat=1. At the heart of the processes of
these SSOs lie IPR policies. While those policies
vary in their terms, each seeks to avoid disputes
similar to those that arose in Rambus. If the cost of
participation in standard setting activities becomes
too great, current SSO participants (and particularly
the largest United States technology companies,
some of which are members of over 300 SSOs, and
own the largest patent portfolios) may choose to
participate in far fewer SSOs. Andrew Updegrove,
Survey: Major Standards Players Tell How They
Evaluate Standard Setting Organizations,
Consortium Standards Bulletin (Jun. 2003),
available at http://www.consortiuminfo.org/
bulletins/jun03.php#featured. The result would be
standards developed by fewer participants.
Historically, such standards have been less likely to
be broadly adopted, because they are suspected of
being more proprietary and less technically effective.
Needless to say, a proposed standard that is not
broadly adopted has failed in its essential purpose.

For standard setting to be successful, SSOs

need to employ policies that will minimize the
probability of releasing a standard subject to the
necessary claims of others. Amici curiae and other
SSOs have adopted IPR policies that vary in their
 22

specifics. See Lemley, supra, at 1904-06, 1973-75

(summarizing the results of a survey of the
intellectual property policies of 43 standard-setting
organizations), and ConsortiumInfo.org, Consortium
and Standards List (2008), available at
http://www.consortiuminfo.org /ssl/links.php?cat=1
(providing links to the IPR policies of scores of
SSOs). But most such IPR policies either (i) require
disclosure of IPR during the standardization process,
or (ii) impose other requirements that make
disclosure unnecessary (such as requiring all
members to pre-commit to granting a royalty-free
license to any necessary claims owned by them).
See, for example, the IPR policy of the World Wide
Web Consortium. W3C, W3C Patent Policy (May 20,
2003), available at http:
//www.w3.org/Consortium/Patent-Policy-20030520.
html.

Despite the best efforts of SSOs to deal with

IPR issues, there have been many disputes with
members involving IPR rights, some of which have
reached the courts or been the subject of
administrative actions brought by the FTC. See, e.g.,
In the Matter of Dell Computer Corp., 121 F.T.C. 616,
1996 FTC LEXIS 291, Docket No. C-3658 (May 20,
1996) (Consent Order) and Stambler v. Diebold, Inc.,
11 U.S.P.Q.2d 1709 (E.D.N.Y. 1988), each of which
involved behavior similar to Rambus. In the former,
Dell entered into a consent decree obligating it to
provide royalty free licenses to all; in the latter,
where the patent owner waited ten years before
asserting its patent claims, the Court applied the
doctrine of laches to bar enforcement of those claims.
Such disputes will certainly become more frequent
 23

as the complexity of technology increases, and will

particularly act to the detriment of companies with
few patents that cannot resolve disputes outside of
the courts by bartering patent licenses back and
forth. As noted by Carl Cargill, then the Director of
Standards for Sun Microsystems (itself a member of
over 100 SSOs):

In [building a mobile] telephone, there are 137

essential patents. The ability of a small
company to enter this market is limited if they
have no large patent portfolio from which to
deal. At the same time, Tim Berners-Lee of
the W3C [World Wide Web Consortium] has
estimated that every time someone clicks a
mouse in a web application, thirty patents are
invoked. Again, if a small company does not
have a significant patent portfolio with which
to deal, they are at the mercy of the patent
holders who own essential patents in the
standards.

Carl F. Cargill, The Sisyphus Agenda:

Standardization as a Guardian of Innovation, 14-15
(Jan. 27, 2003), available at
www.si.umich.edu/~kahin/hawk/htdocs/cargillpaper.
doc.

Even among large companies, all may not be

well. As noted by The Economist, predicting the
Rambus tempest with uncanny accuracy at the very
time that the events at issue were occurring, “[T]he
noisiest of …competitive battles (between suppliers)
will be about standards….[I]n the computer
industry, new standards can be the source of
 24

enormous wealth, or the death of corporate empires.

With so much at stake, standards arouse violent
passions.” Do It My Way, The Economist, Feb. 27,
1993, at 11. The technology world has made huge
strides since this article was written -- today, truly
open standards pervade the technology marketplace.
But if the integrity of the standard setting process is
not upheld, then there is great danger that
technology companies will revert to the types of
battles to impose proprietary standards described in
this article.

B. Absent a Justifiable Presumption

of Trust, Stakeholders have More
to Lose than to Gain by
Participating in Standards
Development

Particularly in the area of technology, where

standards are essential to allow systems to be
assembled out of the products of multiple vendors
and to communicate via the Internet, SSOs provide
their members with the potential for the rapid
development and commercial launch of new products
and services. Yet these groups are voluntary,
consensus-based organizations. They function under
a complex, fragile “honor” system, guided by common
principles of collaboration and collective benefit.

Participants in SSOs pay (often substantially,

in the case of upper level memberships in many
consortia) for the privilege of creating standards. If
industry, academia and government representatives
did not participate in SSOs, the result would be a
world in which only proprietary, so-called “de facto”
 25

standards (such as the Microsoft Windows operating

system) could emerge, after much delay, uncertainty
and cost, and with attendant limitation on long-term
innovation, price competition and business and
private consumer choices.

Tens of thousands of members of SSOs

participate in the development of standards. At the
heart of the decision of each such member to join a
standard setting body is the expectation that the
benefits from participation will exceed the risks and
costs. Factors that make participation seem more
burdensome and less beneficial – such as the risk of
patent ambush - discourage participation, with
attendant damage to the best interests of consumers
and national competitiveness. Amici curiae believe
that any failure to punish patent ambush will not
only undermine the voluntary consensus standards
development process, but encourage destructive
behavior by additional participants as well.

Allowing an SSO member to violate this

system with impunity, as the Commissioners of the
FTC unanimously concluded Rambus set out to do,
presents a threat to the very concept of voluntary
participation. Those that voluntarily participated in
the JEDEC working group that developed the
standards underlying the patent claims at issue
unknowingly helped create (and then walked into)
an extremely expensive trap. If such cynical acts go
unredressed by the courts, similarly situated
technology companies are likely to conclude that it is
ultimately safer to revert to the vastly less
preferable (and recent) practice of developing
proprietary products and services whenever
 26

possible. 2 The result would be protracted and

expensive standards wars, less rapid innovation, less
transparency in government, and the thwarting of
the policy goals of government.

C. SSOs are not Able to Enforce their

IPR Policies Effectively, and Must
Therefore be Able to Rely upon the
Courts and Regulators to Enforce
Policy Obligations

Patent litigation is notoriously expensive, in

part due to the subjectivity involved in evaluating
the validity of a patent claim, and then in
determining whether that claim has in fact been
infringed. The cost of litigating a patent dispute
involving standards is even greater, as it involves
additional subjective judgments. For example, IPR
policies seek to strike a fair balance between the
rights of patent holders with those of implementers,
asking the former for no more than is necessary for
the common good of implementers and consumers.

As a result, only necessary claims (often

described as patent claims that would be
“unavoidably infringed by a compliant

2
The classic example is the commercial war which raged
between two competing, patented, video designs: JVC’s VHS
format and Sony’s Betamax format. This failure by industry to
agree on a common standard ultimately left millions of
consumers with Betamax video players for which new
videotapes could not be rented after the VHS format achieved
supremacy. See ConsortiumInfo.org, What (and Why) is an
SSO? (2003), available at http://www.
consortiuminfo.org/essentialguide/whatisansso.php.
 27

implementation of the standard”) must typically be

licensed on RAND terms. But what if the single
alternative way of implementing the standard would
be unreasonably expensive, or far less technically
effective? Similarly, the question of which license
terms can, and cannot, be rightly characterized as
“reasonable and non-discriminatory” has
increasingly been the subject of litigation. See, e.g.,
Broadcom Corp. v. Qualcomm Inc., 501 F.3d 297 (3d
Cir. 2007).

SSOs, and especially consortia, do not have

large budgets. As a result, they are not capable of
funding patent searches in relation to each standard
that they adopt, nor can they afford, except rarely, to
obtain opinions of patent counsel when disputes
arise. And, in any event, such searches and opinion
would not be binding upon the litigants themselves,
or of more than informational value to a judge or
jury.

Due to the high costs of patent litigation, the

unexpected assertion of necessary claims against
implementers of a standard can be very disruptive to
the adoption of a standard, especially when the
owner of the claim is unwilling to license such claims
to all on RAND terms, or at all. At best, such a
situation can add additional costs of uptake that
may slow adoption and raise costs to consumers. At
worst, it can thwart the success of the standard
entirely.

The integrity and success of voluntary SSOs

requires that the courts be willing, and regulators
able, to enforce SSO IPR policies when they have
 28

been violated. If SSOs must fear that courts will not

uphold IPR policies after the fact, needless
uncertainty is created over members’ disclosure
obligations in practice. Such uncertainty may make
members question whether SSO participation is
worthwhile at all.

As a result, the vital process of standards

development must be able to rely on the courts to
enforce both the intent as well as the word of IPR
policy rules, and validate the trust of those that
engage in the voluntary process of standards
development. In particular, those that develop
standards need to rely upon the courts to sustain the
judgments of regulators when they step in to redress
conduct they believe to be deceptive, because only
the regulatory agencies can effectively protect small
vendors and consumers from the bad acts of those
that violate IPR policy rules.

CONCLUSION

Due to the profound and pervasive adverse

effects anticipated from the Circuit Court’s decision,
amici curiae respectfully request that this Court
grant certiorari.

Respectfully submitted,

/s/
Andrew Updegrove, Esq.
Counsel of Record
GESMER UPDEGROVE LLP
40 Broad Street
Boston, MA 02109